WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi-aventis v. Above.com Domain Privacy/

Transure Enterprise Ltd, Host Master

Case No. D2009-1634

1. The Parties

The Complainant is Sanofi-aventis of Paris, France, represented by Selarl Marchais De Candé, France.

The Respondent is Above.com Domain Privacy/Transure Enterprise Ltd, Host Master, of Victoria, Australia, and Tortola, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <sanofi-aventisus.com> is registered with Above.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2009. On December 3, 2009, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 4, 2009, Above.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 11, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 16, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 17, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on January 8, 2010.

The Center appointed Christos A. Theodoulou as the sole panelist in this matter on January 19, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant, Sanofi-aventis, is a large pharmaceutical company with international reputation. It was formed in 2004, as a result of the merger of two French companies, Aventis SA and Sanofi-Synthelabo.

According to the non-contested allegations of and to the evidence provided by the Complainant, the latter has a substantive presence in the marketplace of United States of America.

Moreover, the Complainant owns several trademark registrations around the world for SANOFI AVENTIS in Class 5 and also disposes of numerous relevant domain names, among which one may trace <sanofi-aventis.us>.

The Panel is unaware of any specific information with regard to the Respondent.

The disputed domain name was created on March 23, 2009.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its trademarks, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

Before engaging itself into the usual threefold discussion of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue related to the default of the Respondent. The implications of a default in this case are obvious: since the Complainant has the burden of proof, according to paragraph 4(a) of the Policy (“In the administrative proceeding, the complainant must provethat each of these three elements are present”), the Panel may not just grant the Complainant's request automatically, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy (see FNAC v. Gauthier Raymond,
WIPO Case No. D2004-0881; Sonofon A/S v. Vladimir Aleksic, WIPO Case No. D2007-0668; Gaudi Trade SpA v. Transure Enterprise Ltd, WIPO Case No. D2009-1028).

The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy.

A. The disputed domain name is identical or confusingly similar to trademarks, in which the Complainant has rights (paragraph 4(a)(i) of the Policy)

The Complainant has presented evidence that it owns the rights to the trademark SANOFI AVENTIS. The two international registrations for SANOFI AVENTIS, as well as community trademarks for SANOFI AVENTIS, and also national registrations in France and Canada have proven this. The worldwide use of the mark over the Internet, especially through the Complainant's websites, reinforces this ownership. It is to be noted that all the above were registered prior to the registration of the disputed domain name.

The mere fact that the Respondent has added to the SANOFI AVENTIS mark the descriptive word “us” does not affect the essence of the matter: the disputed domain name wholly incorporates the Complainant's registered trademark SANOFI AVENTIS and this is by itself sufficient to establish the criterion of similarity for purposes of the Policy, as many UDRP panels have found in the past (see, e.g. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; DFDS A/S v. NOLDC INC,
WIPO Case No. D2006-1070). What is more, the Complainant is particularly active in the United States.

In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point and holds that the disputed domain name is identical or confusingly similar to the Complainant's trademark.

B. The Respondent has no rights or legitimate interests in the disputed domain name (paragraph 4(a)(ii) of the Policy)

Under paragraph 4(c) of the Policy any of the following circumstances, if found by the Panel to be proved based on its evaluation of the evidence presented, shall demonstrate a registrant's rights to and legitimate interests in a domain name:

i. Demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute: in this case, the Respondent is not using the domain name for offering any goods or services, but as a parking site, which, most probably, brings him commercial gain through the exploitation of the Complainant's known marks.

ii. An indication that the registrant has been commonly known by the disputed domain name, even if it has acquired no trademark rights: there is no such indication from the record.

iii. Legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue: there is no such indication from the record.

Furthermore, it is to be noted that the Respondent has no trademark rights over the disputed domain name, nor does he dispose of any license by the Complainant / rightholder, with whom there seems to exist no relationship whatsoever.

As a conclusion on this point, the Panel holds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. The Respondent registered and is using the disputed domain name in bad faith (paragraph 4(a)(iii) of the Policy)

The Complainant's argumentation aims to establish any of the four circumstances mentioned in paragraph 4(b) of the Policy, which would be enough to prove the Respondent's bad faith, since those will separately prove bad faith registration and use.

In reviewing the present case, the Panel has noted that the Respondent has used the disputed website to redirect users to other websites, belonging to competitor entities of the Complainant. This clearly shows to the Panel that the Respondent knew, when registering the disputed domain name, of the existence of the trademark SANOFI AVENTIS and its affiliation to the medical field. It also proves that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark.

The Panel also notes the lack of reply of the Respondent to the Complainant's cease and desist letter, which, according to the justified syllogism of the panel in the HSBC case (The Hongkong and Shanghai Banking Corporation Limited v. Bill Lynn,
WIPO Case No. D2001-0915), “[…] reinforces the inference of bad faith registration and bad faith use”.

The bad faith of the Respondent may be gathered through a simple, logical process, as well, in the sense that it would, indeed, be highly unlikely that the Respondent could come up randomly and unintentionally with an invented word, such as “sanofi-aventis”, which appears in no dictionary and has absolutely no meaning, and register it as his own domain name, while at the same time combining it with the descriptive word “us” (i.e., United States), which happens to be a market where the Complainant is very active.

As a consequence to the above, the Panel holds that the Respondent registered and is using the disputed domain name in bad faith.

7. Decision

The Complainant has successfully proved that the disputed domain name is identical or confusingly similar to trademarks in which it has rights, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent registered and is using the disputed domain name in bad faith.

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <www.sanofi-aventisus.com>, be cancelled as requested by the Complainant.